USPTO Patents Application 09734988

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

David Resnick

27683 7590 09/02/2008 I ™ a »,™t™

HAYNES AND BOONE, LLP I examiner

90 1 Main Street milef, elda g

Suite 3100 I

Dallas, TX 75202 I art unit

PAPER NUMBER

MAIL DATE | DELIVERY MODE

09/02/2008 PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

l/ffflrC? nVrliUli Otfff Iff ids y

Application No.

09/734,988

Applicant(s)

RESNICKET AL.

Examiner

Elda Milef

Art Unit

3692

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address —
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

1 )^| Responsive to communication(s) filed on 08 May 2008 .
2a )£3 This action is FINAL. 2b)^ This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) ^3 Claim(s) 35-49 and 51-65 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) |EI Claim(s) 35-49 and 51-65 is/are rejected.

7) D Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) L~H The specification is objected to by the Examiner.

10)D The drawing(s) filed on is/are: a)^ accepted or b)^ objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1 0 Certified copies of the priority documents have been received.

20 Certified copies of the priority documents have been received in Application No. .

3.Q Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) ^| Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) □ Information Disclosure Statement(s) (PTO/SB/08) 5 ) □ Notice of Informal Patent Application

Paper No(s)/Mail Date . 6) □ Other: .

PTOL-326 (Rev. 08-06) Office Action Summary Part of Paper No./Mail Date

Application/Control Number: 09/734,988 Page 2

Art Unit: 3692

DETAILED ACTION
Status of the Claims

1 . This office action is in response to the amendments submitted by the
applicants on 5/8/2008.

• Claims 1-34, 50 are cancelled.

• Claims 35-49, 51-65 are amended.

• Claims 35-49, 51-65 are pending in the application.

Claim Rejections - 35 USC §112

The following is a quotation of the first paragraph of 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the
manner and process of making and using it, in such full, clear, concise, and exact
terms as to enable any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same and shall set forth the
best mode contemplated by the inventor of carrying out his invention.

2. Claims 35-39, 57-58, 48, 49, 51 -56 are rejected under 35 U.S.C. 1 1 2, first
paragraph, as failing to comply with the written description requirement. The claim(s)
contains subject matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor(s), at the time the
application was filed, had possession of the claimed invention.

Re claim 35: The Examiner could not find support in the specification for the
newly added limitation "wherein the intermediary account number is different from the
end-user account number ."

Re claim 48: The Examiner could not find support in the specification for the
newly added limitation "the transaction data including the end-user account identifier."

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Claims 36-39, 49, 51-58 are rejected because of their dependency to the rejected

claims.

The following is a quotation of the second paragraph of 35 U.S.C. 112:

The specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.

3. Claim 49 is rejected under 35 U.S.C. 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention.

Claim 49 recites the limitation "the end-user's intermediary account number" in
line 2. There is insufficient antecedent basis for this limitation in the claim.

Claim Rejections - 35 USC § 102

The following is a quotation of the appropriate paragraphs of 35
U.S.C. 102 that form the basis for the rejections under this section made in this Office

A person shall be entitled to a patent unless -

(e) the invention was described in (1) an application for patent, published under
section 122(b), by another filed in the United States before the invention by the
applicant for patent or (2) a patent granted on an application for patent by
another filed in the United States before the invention by the applicant for patent,
except that an international application filed under the treaty defined in section
351 (a) shall have the effects for purposes of this subsection of an application
filed in the United States only if the international application designated the
United States and was published under Article 21 (2) of such treaty in the English
language.

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4. Claims 40-42, 59-61, 63-64 are rejected under 35 U.S.C. 102(e) as being
anticipated by Dorf (U.S. Patent No. 6,000,608).
Re claims 40, 41 : Dorf discloses:

associating an account identifier with an intermediary account number that
represents an end-user's prepaid account maintained by a telecommunications
provider; storing the association in a database coupled to a central payment
processor, wherein the association includes information that allows the central
payment processor to identify the end-user's prepaid account when presented with
the account identifier;

-see col. 7 lines 2-26, and Figs. 1 and 2; cols. 5-7;

facilitating a payment transaction between the end-user and a point-of-sale, the
payment transaction including receiving a payment from the end-user at the point-of-
sale together with the account identifier -see col. 7 lines 2- 35; col. 8 lines 1-21; cols.
5-7;

electronically communicating transaction data including the account identifier
from the point-of-sale to the central payment processor-see "processing hub"-fig.2 and
related text;

validating the transaction data in the central payment processor, and
transmitting a response to the point-of-sale-see col. 8 lines 22-33; and

looking up the intermediary account number associated with the account identifier-
see col. 7 lines15-22;

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sending a message from the central payment processor to the telecommunication
provider for loading value into the end-user's associated prepaid account responsive
to the payment transaction if the validating step results in approval of the transaction,
wherein the message to the telecommunications provider includes the intermediary
account number.-see col. 7 lines 9-13, col. 8 line 50-col.9 line 10, col. 10 lines 61-64.

Re claim 42: Dorf discloses:

wherein said communicating step comprises communication between the point-
of-sale and the central payment processor via a merchant hub. -see fig. 2 "Retailer E".
Re claims 59-61 : Dorf discloses:

wherein receiving a payment from the end-user at the point of sale includes
receiving the payment:

in the form of cash-see col. 5;

as a debit card transaction-see cols. 5,7,8;

as a credit card transaction-see col. 8 lines 3-6;

Re claim 63: Dorf discloses a brick-and-mortar retail merchant site. -see col. 5.
Re claim 64: Dorf discloses a system and method wherein the terminal located
at the point-of-sale comprises an automated teller machine (ATM)-see col. 1 ;

Claim Rejections - 35 USC §103

The following is a quotation of 35 U.S.C. 1 03(a) which forms the basis for all

obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed
or described as set forth in section 102 of this title, if the differences between the

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subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was
made.

5. Claims 35, 36, 38, 39, 48, 49, 52, 53, 57, 58 are rejected under 35 U.S.C.
103(a) as being unpatentable over Dorf (U.S. Patent No. 6,000,608) in view of Hogan
(US Patent No. 5,704,046).

Re claim 35: Dorf discloses:

a terminal located at a point-of-sale where monetary consideration is received
from or on behalf of an end-user to pre-pay for selected goods or services, the terminal
operable to exchange electronic messages with a financial network; ("The system 108
comprises a plurality of cards 101 , a sponsor bank processor 102, and a processing
hub 1 03, which serves as the nerve center of the system 1 08. If the system 1 08 is to
provide prepaid phone cards, it will also include a prepaid phone card issuer hub 104
maintained by a prepaid phone card issuer. In order to achieve the desired
functionality, the system 108 uses existing banking networks in a unique and novel way
to gain access to virtually all existing retail point-of-sale (POS) devices 105. These
devices 105 include stand-alone POS terminals, cash registers with POS interfacing,
computers with POS interfacing, and other similar devices which can be used to access
the banking system. ")-see col. 4 lines 19-32;

a payment processor in communication with the financial network (col. 4 lines 47-
65) and including a database associating each of a plurality of intermediary account
numbers with at least one corresponding end-user account number, ("Once the

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data is received... the processing hub 103 recognizes the identification number of the
card as being associated with a particular prepaid phone card issuer. Next, a security
check is performed to verify that this transaction is originating from a retailer that is
authorized to sell the prepaid phone cards. If the transaction is originating from an
authorized retailer, the transaction will proceed... The issuer hub 104 contains one or
more phone card databases 204... When the issuer hub 104 receives the data from the
processing hub103, it activates the record in the phone card database 204 having the
same identification as the card 101 ...upon receipt of the transaction data, the hub 103
recognizes the card 101 as being an Electronic Gift Certificate card of the retail issuer
and activates or recharged the card 101 In the appropriate amount in an EGC
database205 maintained at the processing hub 103.")-see col. 7 line 2-col. 8 line 2;

a crediting device in communication with the payment processor and being
configured to credit an indicia of monetary value to an intermediary account number
associated with the end-user account number in response to receiving a payment
message from the point-of-sale terminal; and

an interface device in communication with the payment processor and
configured to communicate at least a recharge transaction message to an end-users
account with a vendor corresponding to the intermediary account number.
("Optionally, the Electronic Gift Certificate card 101 could also be recharged, the
recipient of the card 101 is allowed to make purchases using the card... If the card 101
is for use in many retail locations, it would instead be processed during purchase
transactions as a typical debit card, preferably using the debit network107...the retail

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issuer or the cardholder must have an account with the sponsor bank. . .The sponsor
bank then transfers the purchase amount... The transaction data is then forwarded to
the processing hub 103 so that the EGC database 205 can be updated... -see col. 6 to
col.9 line 10, col. 10 lines 62-64.

-Also, see cols. 4-6, Figs. 1 and 2 (crediting device and interface).

Dorf do not explicitly disclose wherein the intermediary account number is
different from the end-user account number. Hogan however, teaches a commercial
transaction system wherein a user uses a card device to interact with sales or
transaction terminals to conduct cashless transactions. Hogan teaches ("the account
number identifies the account associated with card 100 for billing purposes. The card
number acts as a subaccount number identifying additional cards issued under the
same account number. Thus, for example, a spouse may possess an associated
financial card having the same account number but a different card number .")-see col. 5
line 66 to col. 6 line 5. It would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify Dorf to explicitly include the card
number [intermediary account number] is different than the account number as taught
by Hogan in order to provide a cost effective, secure, and efficient system whereby a
card user can conduct transactions of relatively small values without using cash.

Re claim 36: Dorf discloses a system and method:

wherein the terminal located at the point-of-sale comprises an automated teller
machine (ATM)-see col. 1;

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Re claims 38 and 39: Dorf discloses wherein the financial network comprises a
card association network, and the acquiring processor configured to communicate
messages between the financial network and a plurality of the terminals. -see col. 1 lines
19-23, col. 4 lines 47-67.

Re claim 48: Dorf discloses a method for effecting payment for goods and
services-see cols. 7-9, further the remaining limitations are similar to those in claims 35
and 40 and are rejected using the same art and rationale. Dorf does not specifically
disclose that the transaction data includes the end-user account identifier. Hogan
however, teaches the transmission of transaction information including the account
number as well as the card number from the point of sale to the financial services
company to the issuer computer, -see col. 6 lines 49-64 and Fig. 3. It would have
been obvious to one having ordinary skill in the art at the time the invention was made
to modify Dorf to specifically include the transmission of account data as taught by
Hogan in order to provide a cost-effective and efficient system whereby a card user can
conduct transactions without using cash.

Re claim 49: Dorf disclose issuing a card to the end-user that includes
identification of the end-user's intermediary account, -see col. 7 lines 2-20.

Re claims 52, 53, 57: Dorf discloses wherein the end-user's account identifier
has an account number corresponding to a valid credit card account number and can be
presented by the end-user to purchase goods and services.-see col. 4 lines 36-67 and
col. 1.

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Re claim 58: Dorf discloses wherein the end-user's account has an account
number corresponding to a valid credit card account number to facilitate electronic
messaging over existing credit card association networks. -see col. 4.

6. Claims 43,45-47,62 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Dorf in view of Muehlberger (U.S. Patent No. 5,696,908).

Re claims 43, 45, 47 : Dorf discloses a system and method designating an
intermediary bank account and collecting an amount of money equal to the
payment amount, subject to adjustment, from the point-of-sale merchant's bank
account into the intermediary bank account-see fig. 2 and col. 6 lines 32-51 . Dorf
does not specifically disclose electronic funds transfer and wherein said collecting step
is effecting via the ACH. Muehlberger however, teaches using electronic funds transfer
and ACH in col. 3 lines 21-24. It would have been obvious to one having ordinary skill
in the art at the time the invention was made to modify Dorf to include electronic funds
transfer as taught by Muehlberger in order to for the customer to be able to use the
telephone card immediately.

Re claim 46: Dorf discloses wherein the telecommunications vendor is a prepaid
platform operator, -see col. 5 lines 19-20.

Re claim 62: Although Dorf discloses a system and method, ("In order to
achieve the desired functionality, the system 108 uses existing banking networks in a
unique and novel way to gain access to virtually all existing retail point-of-sale (POS)
devices 105...")-see col. 4 lines 25-35, Dorf does not specifically disclose wherein the

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point-of-sale terminal comprises a vending machine. Muehlberger however, teaches
("Telephone debit cards are automatically vended through a microprocessor controlled
vending machine -see Abstract, and col. 3 It would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify Dorf to include that
the point-of-sale terminal be a vending machine as taught by Muehlberger in order to
provide the customer with convenience of purchasing a pre-paid card at multiple
locations.

7. Claims 37, 54, 55 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Dorf in view of Hogan as applied to claim 35 above, further in view of Muehlberger
(U.S. Patent No. 5,696,908).

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Re claim 37: Although Dorf discloses a system and method, ("In order to
achieve the desired functionality, the system 108 uses existing banking networks in a
unique and novel way to gain access to [virtually all existing retail point-of-sale (POS)
devices 105...")-see col. 4 lines 25-35, Dorf does not specifically disclose wherein the
point-of-sale terminal comprises a vending machine. Muehlberger however, teaches
("Telephone debit cards are automatically vended through a microprocessor controlled
vending machine -see Abstract, and col. 3 It would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify Dorf and Hogan to
include that the point-of-sale terminal be a vending machine as taught by Muehlberger
in order to provide the customer with convenience of purchasing a pre-paid card at
multiple locations.

Re claims 54, 55: Dorf discloses a system and method designating an
intermediary bank account and collecting an amount of money equal to the
payment amount, subject to adjustment, from the point-of-sale merchant's bank
account into the intermediary bank account-see fig. 2 and col. 6 lines 32-51 . Dorf and
Hogan do not specifically disclose electronic funds transfer and wherein said collecting
step is effecting via the ACH. Muehlberger however, teaches using electronic funds
transfer and ACH in col. 3 lines 21-24. It would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify Dorf and Hogan to
include electronic funds transfer as taught by Muehlberger in order to for the customer
to be able to use the telephone card immediately.

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8. Claim 44 is rejected under 35 U.S.C. 103(a) as being unpatentable over
Dorf in view of Muehlberger as applied to claim 43 above further in view of Risafi (US
Patent No. 6,473,500).

Re claim 44: Dorf and Muehlberger do not specifically disclose said collecting
step is carried out in a batch mode on a daily basis. Risafi however, teaches ("In
addition to activating a card using these two methods, other functions can be performed
on either an individual or a batch basis. The PIN can be changed, the card account can
be reloaded, either by the card user or on the card user's behalf, purchases can be
made, and the account can be closed. ")-see col. 9 lines 19-23, col. 12 lines 52-67, col.
14 lines 31-67. It would have been obvious to one having ordinary skill in the art at the
time the invention was made to modify Dorf and Muehlberger to include batch
processing as was done by Risafi in order to process many cards at a time.

9. Claim 51 is rejected under 35 U.S.C. 103(a) as being unpatentable over Dorf in
view of Hogan as applied to claim 48 in further view of Carson (U.S. Patent No.
6,028,920).

Re claim 51: Although Dorf discloses ("The multifunction card system further
comprises at least one phone card having a unique identification number encoded on
it...")-see col. 3 lines 28-41, Dorf and Hogan do not specifically disclose the account is a
cellular phone account. Carson however, teaches a pre-paid phone card system
wherein the telephone service provider associated with the pre-paid telephone card is a
wireless telephone service provider, -see col. 16 lines 40-49. It would have been

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obvious to one having ordinary skill in the art at the time the invention was made to
modify Dorf and Hogan to include a pre-paid telephone card to be used with wireless
phone service as taught by Carson in order to provide the customer with a means of
pre-paying for wireless telephone service.

10. Claim 65 is rejected under 35 U.S.C. 103(a) as being unpatentable over
Dorf in view of Risafi (US Patent No. 6,473,500).

Re claim 65: Dorf does not specifically disclose electronically communicating
data includes interaction with an IVR system via telecommunications. Risafi however,
discloses a pre-paid card system and method using voice recognition. -see col. 7 lines 3-
8. It would have been obvious to one having ordinary skill in the art at the time the
invention was made to modify Dorf to include a voice recognition system in order to
connect to a network.

1 1 . Claim 56 is rejected under 35 U.S.C. 103(a) as being unpatentable over
Dorf in view of Hogan as applied to claim 48, further in view of Risafi (US Patent No.
6,473,500).

Re claim 56: Although Dorf discloses the user presents the credit card account
number in order to purchase goods or services by first making a payment in person at a
point of sale to load into the corresponding intermediate account-see col. 4 lines 47-67,
Dorf and Hogan do not specifically disclose purchasing via the Internet. Risafi however,
teaches ("Another use for the invention is in electronic commerce as making purchases

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via the Internet. ")-see col. 19 lines 66-67. It would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify Dorf and Hogan to
include the using the pre-paid card to make purchases via the Internet as taught by
Risafi in order to provide the user with the purchasing convenience provided by the
Internet.

Response to Arguments

12. Applicant's arguments with respect to claim35-49, 51 -65 have been
considered but are moot in view of the new ground(s) of rejection.

Furthermore, the applicant defines "an intermediary account" as a card number
on page 10 line 1 1 of the specification. Regarding the applicant's suggestion that none
of the prior art cited by the examiner disclose an intermediary account, the applicant's
attention is directed to col. 7 to col. 8 and figs. 1 and 2, wherein Dorf discloses various
methods of transferring data from a retailer to a processing hub to an issuer hub. Each
step relating an identification number on a card or an account number to another end
user account number. For example col. 7 lines 1-32 discloses transaction data being
received at the processing hub 103 which recognizes the identification number of the
card ( end user account number), after verification of the information, the processing
hub 103 forwards the card identification number (end user account number), retail store,
and POS device information to the issuer hub 104 maintained by the prepaid phone
card issuer. The issuer hub 104 receives the data and activates the record in the phone
card database 204 having the same identification number as the card 101 (intermediary
account). The value field in the record is then increased by the appropriate purchased

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amount. . . The issuer hub 1 04 then returns an authorization number to the originating
POS device 105... Each activation or recharge transaction is recorded by the system
108... Transfer of funds between these parties may then take place by any commercially
acceptable means.

Dorf further discloses an electronic gift certificate card in col. 7 lines 35-67
wherein when an activation transaction takes place, the bank would transfer the
activation amount form a general account to an account corresponding to the card.
Another example can be found in col. 8 lines 62-65 wherein Dorf discloses "When the
card 101 is used to make a long distance call, the phone card issuer hub 104 instructs
the processing hub 103 to seize the record corresponding to the card 101 in the EGC
database 205."

Conclusion

13. The prior art made of record and not relied upon is considered pertinent to
applicant's disclosure.

US Patent No. 5,649,1 18 (Carlisle et al.)-cited for its reference to smart card with
multiple charge accounts.

US Patent No. 6,047, 267(Owens) -cited for its reference to relational databases
Method and apparatus for tracking multiple payment resources and charging
transactions to payment resources in on line transaction processing system

US Patent No. Re. 36, 365 (Levine et al.) cited for pre-paid card having card
number including a bank identification number (BIN).

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Applicant's amendment necessitated the new ground(s) of rejection presented in
this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
CFR 1.136(a).

A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1 .136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the date of this final action.

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Elda Milef whose telephone number is (571)272-8124.
The examiner can normally be reached on Monday -Friday 9:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Kambiz Abdi can be reached on (571 )272-6702. The fax phone number for
the organization where this application or proceeding is assigned is 571-273-8300.

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Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.

/Kambiz Abdi/ Elda Milef

Supervisory Patent Examiner, Art Unit 3692 Examiner

Art Unit 3692